In a pair of related rulings, the US Court of Appeals for the Federal Circuit reviewed two decisions from two different agencies involving the same patent. The Court ultimately found that the International Trade Commission (ITC) correctly identified the owner of the asserted patent, and that the Patent Trial & Appeal Board correctly determined that the asserted patent was unpatentable. Causam Enterprises, Inc. v. Int’l Trade Comm’n, Case No. 23-1769 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.); Causam Enterprises, Inc. v. ecobee Techs. ULC, Case No. 24-1958 (Fed. Cir. Oct. 15, 2025) (Taranto, Chen, Stoll, JJ.)
Causam initiated a complaint before the ITC, alleging that certain importers infringed its patent directed to technology for reducing electrical utilities power demands. The asserted patent claims priority as a continuation-in-part of a parent patent application. Although the face of the asserted patent lists Causam as the assignee, the parent application was assigned to another entity a decade earlier, along with “all patents which may be granted therefor” and “all divisions, reissues, continuations, and extensions thereof.” The assignment did not expressly include continuations-in-part.
The chief administrative law judge (ALJ) issued an initial determination that Causam was not the owner of the asserted patent and that no infringement had occurred. Causam subsequently requested a review of the initial determination by the full Commission. The Commission adopted the ALJ’s findings of noninfringement but declined to adopt the findings regarding ownership. Causam appealed.
Ownership of a patent is a threshold requirement for asserting Article III standing, and the complainant bears the burden of establishing standing in the pleadings. On appeal, the Commission and the ITC respondents argued that ownership of the asserted patent did not need to be decided for standing purposes as Causam had pleaded ownership in its complaint. The Federal Circuit disagreed, emphasizing that, as an Article III court, it is required to consider Article III’s standing requirements, even if the ITC is not. Because the issue turned on contract interpretation and did not require underlying factual findings, the Federal Circuit reviewed the standing issue de novo.
The Federal Circuit ultimately determined that the omission of the term “continuation-in-part” from the assignment agreement meant that the asserted patent was not included in the assignment and thus Causam had ownership of the asserted patent. The ITC respondents argued that the inclusion of “continuation” language was sufficient to encompass both continuations and continuations-in-part. The Court rejected this argument, noting that adopting such a position would effectively “insert words into the contract that the parties never agreed to,” particularly because continuations and continuations-in-part (which by definition include new matter not found in the priority application) are widely understood to be distinct concepts within patent law.
The Federal Circuit noted that such a distinction is especially significant in the context of patent assignments. In the case of continuations, recordation of the assignment of the parent patent or application is effective as to a child patent. In contrast, the same is not true for a continuation-in-part, meaning that parties may contract differently with respect to continuations versus continuations-in-part.
As a result, the Federal Circuit concluded that Causam owned the asserted patent and had standing to assert it. However, on the same day, the Federal Circuit affirmed the Board’s decision that the asserted patent was unpatentable, thereby mooting any issues of noninfringement.
At the Board, ecobee had petitioned for inter partes review (IPR) of the asserted patent, alleging that certain claims would have been obvious to a person of ordinary skill in the art as of the priority date, based on two prior art references. While neither party to the IPR directly disputed that Causam was the patent owner, Causam argued that because ownership was potentially in dispute, the would-be third-party owner should have received copies of the petition so it could adjudicate its rights.
The Board instituted the IPR and ultimately found all challenged claims unpatentable. The Board also concluded that ecobee had complied with the statutory service requirements by serving the patent owner of record. Causam appealed.
As a threshold matter, the Federal Circuit considered whether it had standing to hear the appeal, since it is bound by the standing requirements of Article III (unlike the Board). Based on Causam’s unequivocal assertion of ownership of the patent and the absence of compelling evidence to the contrary, the Court concluded that it had standing to review the appeal.
On the merits, Causam’s arguments were based solely on the Board’s claim construction. The Federal Circuit found no error in that construction and affirmed the Board’s finding of unpatentability. The Court also found that the Board did not err in not deciding ownership of the patent as the ownership dispute was never concretely before the Board.
